Emperor Sports Pty Ltd v Commissioner of Patents [2005] FCA 996

FEDERAL COURT OF AUSTRALIA

Emperor Sports Pty Ltd v Commissioner of Patents [2005] FCA 996 PATENTS – amendment – obviousness – novelty – post-grant re-examination by Commissioner of Patents pursuant to request made by third party under s 97(2) of the Patents Act 1990 (Cth) – Commissioner required by s 98 to report on whether invention not novel and whether invention did not involve inventive step, when compared with prior art base as it existed before priority date, excluding information made publicly available only through the doing of an act – third party requesting re-examination by Commissioner required by reg 9.2 of Patents Regulations 1991 (Cth) to identify documents on basis of which third party asserts any claim not novel or does not involve inventive step – how test of obviousness to be applied on ex parte re-examination under s 97(2), without evidence as to whether person skilled in the relevant art would have ascertained, understood and regarded as relevant the information in the documents identified by the third party in its request – 'onus' – whether evidence required – nature of re-examination under s 97(2) – whether amendment is part of re-examination process – whether decision on application for leave to amend must be made before decision to revoke – whether Commissioner at liberty simply to decide to revoke on assumption specification amended as requested – tests for allowable amendments. Patents Act 1990 (Cth) ss 7, 97(2), 98, 99, 101(2), 104, Dictionary ('prior art base', 'prior art information') Patents Regulations 1991 (Cth) regs 9.2, 9.5 Commissioner of Patents v Microcell Ltd (1959) 102 CLR 232 cited Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd (1999) 99 FCR 151 cited E I Dupont de Nemours & Co v Imperial Chemical Industries Plc (2002) 54 IPR 304 cited F Hoffman-La Roche & Co AG v Commissioner of Patents (1971) 123 CLR 529 cited F Hoffman-La Roche AG v New England Biolabs Inc (2000) 99 FCR 56cited Firebelt Pty Ltd v Brambles Australia Ltd (2002) 188 ALR 280 cited Imperial Chemical Industries Ltd's Application [1960] RPC 223 cited Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2003) 56 IPR 479 cited Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 cited Mather v Lockwood Australia Pty Ltd [2001] FCA 1814 cited Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 cited